International Application

An international application may be presented to the International Bureau on the relevant official form (form DM/1) or through the electronic filing (E-filing) interface made available by the International Bureau.  If an international application, governed exclusively by the 1999 Act, has been presented to the International Bureau through an Office, the Office should indicate the date on which it received the international application in the separate box “For use by the Office indirect filing”.  This date is important since it will become, in principle, the date of the international registration (refer to “Date of the international registration”). 

Where an item of form DM/1 is mandatory, it is indicated in parenthesis next to its title “(Mandatory)”.  Where an item is mandatory following a certain designation, it is indicated in a footnote at the end of the item.  The E-filing interface automatically checks the said mandatory and additional mandatory contents of the application.  In  principle, paper applications may be submitted either directly to the International Bureau or via the Office of a Contracting Party (refer to “Channels of communication”). 

 Rule 7(1)

Annex I to form DM/1 allows the applicant to submit a “Declaration of Inventorship” or, if not possible, a “Substitute Statement in Lieu of a Declaration of Inventorship”, in respect of a designation of the United States of America.   It is mandatory if the United States of America is designated.  Annex II allows the applicant to submit supporting documentation accompanying an international application in support of a declaration concerning exception to lack of novelty to the Korean Intellectual Property Office (KIPO).  Annex III serves to submit a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned.  It is only relevant for the designation of the United States of America.  Annex IV allows the applicant to support a claim of micro entity status with a micro entity certification in order to benefit from a reduction of the individual designation fee in respect of a designation of the United States of America.  Annex V allows the applicant to submit (a) document(s) in support of a priority claim (priority document) to the Korean Intellectual Property Office (KIPO).

Sections corresponding to Annexes I, II, III, IV and V are also included in the E-filing interface.

The E-filing interface has the following advantages:

  • personalized workbench environment (Portfolio Manager);
  • uploading of multiple reproductions simultaneously;
  • real-time checking of certain formalities;
  • saving of applications in progress;
  • a fully integrated fee calculator;
  • online payment by credit card;
  • faster delivery of the application;
  • lower fees when the application contains many reproductions of the industrial designs to be registered, since reproductions submitted on paper are subject to a fee for each page beyond the first (refer to “Fees due” in “Payment of fees”);
  • instant acknowledgement of receipt with all the details of the submitted application;
  • sending corrections to irregularities or defects (including corrected reproductions and documents) to the International Bureau;
  • receiving and downloading notifications from the International Bureau relating to international applications;  an
  • retrieving in real-time the current status of international applications.

When a notification concerning an international application filed through the E-filing interface is available, the user who filed an international application will receive an e-mail alert.  The e‑mail address used is the one used to create the user account.  The alert will provide an invitation to log into the secure environment in order to consult the notification.  For security reasons, attachments or links are not included in the e-mail alert.  The International Bureau, however, will send notifications by regular mail in all cases.

However, please note that the E-filing interface may not be used if the applicant wishes to include specimens of the industrial design(s) instead of reproductions.

Rule 9(1)A.I. Section 401(c)

How to complete the international application (form DM/1 or E-filing)?

The following explanations follow the structure of the official paper form for an international application (form DM/1) and refer to the successive items contained in the form.  It is understood that these explanations apply mutatis mutandis to the E-filing interface.

In the separate box of form DM/1, the applicant may indicate his own reference, number of continuation sheets (if any) and the Annexes accompanying the international application (if any).

Item 1:  Applicant (mandatory)

Name

Where the applicant is a natural person, the name to be indicated is the family (or principal) name and the given (or secondary) name(s) of the natural person, as customarily used by that person and in the order in which they are customarily used.  Where the applicant is a legal entity, its full official designation must be given.  Where the name of the applicant is in characters other than Latin characters, the name must be indicated as a transliteration into Latin characters, following the phonetics of the language of the international application.  Where the applicant is a legal entity, the transliteration may be replaced by a translation into the language of the international application.

Rule 7(3)(i)A.I. Section 301

Several applicants

Where there is more than one applicant, the appropriate box should be ticked and the relevant information regarding each of the other applicants should be furnished on a continuation sheet.  The E-filing interface also allows the indication of several applicants.

Address

The address of the applicant must be given in such a way as to satisfy the customary requirements for prompt postal delivery and should consist, at least, of all the relevant administrative units up to, and including, the house number, if any.  In addition, telephone or facsimile numbers and an email address may be given.  For E-filing, an email address has to be indicated.

Rule 7(3)(ii)A.I. Section 205(1)A.I. Section 301(d)


Item 2:  Entitlement to file (mandatory)

Although only one entitlement with one Contracting Party is required in order to file an international application, more than one Contracting Party may be indicated for each criterion in item 2.  The applicant is required to indicate in item 2 the Contracting Party(ies) in which he has a real andeffective industrial or commercial establishment (if any), as well as the Contracting Party(ies) in which he has a domicile (if any), and also the Contracting Party(ies) of which he is a national (if applicable).

 Rule 7(3)(iii)

In addition, the applicant is required to indicate the Contracting Party(ies) in which he has habitual residence (if any), provided that such Contracting Party is bound by the 1999 Act.  In fact, the possibility of claiming an entitlement through habitual residence is contemplated only by the 1999 Act, and not by the 1960 Act.

For a paper application, the full name of the Contracting Party should be indicated.  For an electronic application, the official two-letter code for the Contracting Party should be selected from the corresponding dropdown list.

The indications concerning each of the above criteria must all be completed, even if the Contracting Party concerned is the same in each case.  If any criterion is not applicable, the applicant should simply write “None”.

Entitlement via an intergovernmental organization

Intergovernmental organizations may become party to the 1999 Act.  There are currently two such Contracting Parties:  the European Union (EU) and the African Intellectual Property Organization (OAPI).

Applicants having a real and effective industrial or commercial establishment, a domicile or a habitual residence, in a Contracting Party that is a member State of an intergovernmental organization that is a Contracting Party, or being a national of a Contracting Party that is a member State of an intergovernmental organization that is a Contracting Party, should indicate both that Contracting Party and that intergovernmental organization.  However, where entitlement is derived from a connection with a member State of an intergovernmental organization but which is not itself a Contracting Party, only the name of the intergovernmental organization should be indicated.

Multiple entitlements

It is important for the applicant to indicate his multiple entitlements in different Contracting Parties, since that applicant would then be in a position to cumulate those multiple entitlements with a view to obtaining protection on a broader geographical scale.

For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act and whose domicile is located in Contracting Party B, bound exclusively by the 1999 Act, could, as a result, designate all Contracting Parties bound by the 1960 and/or 1999 Acts.

Where an applicant enjoying a plurality of independent entitlements under the 1960 and 1999 Acts designates a Contracting Party bound by the same Acts, the designation of that Contracting Party will be governed by the 1999 Act, which is the most recent Act (refer to “Determination of which Act is applicable in respect of the designation of a given Contracting Party”).

Item 3:  Applicant’s Contracting Party (mandatory where the 1999 Act applies)

Under the 1999 Act, the applicant’s Contracting Party is the Contracting Party through which the applicant derives the right to file an international application.  If only one Contracting Party bound by the 1999 Act is indicated under item 2, that Contracting Party must also be indicated under item 3.  On the other hand, if several Contracting Parties bound by the 1999 Act are indicated under item 2, one of them must be selected as the applicant’s Contracting Party.  That Contracting Party must be specified by the applicant in any international application governed exclusively or partly by the 1999 Act (as regards the determination of the applicant’s Contracting Party, refer to “Determination of the applicant's Contracting Party under the 1999 Act”).

99 Article 1(xiv)Rule 7(4)(a)

The indication of the State of origin under the 1960 Act is not required in international applications since such indication does not have any effect on the examination carried out by the International Bureau.  It may however be deduced through the indications of the entitlements claimed in the international application form (as regards the determination of the State of origin, refer to “Determination of the State of origin under the 1960 Act”).

Item 4:  Address for correspondence

Where the name and address of a representative has been given in item 5 of the international application form, all communications which are required to be sent by the International Bureau to the applicant are sent to that address.  Otherwise, all communications are sent to the address of the applicant, as indicated in item 1 of the application form.

Where, however, an applicant has not indicated the name and address of a representative and requires that correspondence be sent to an address other than that indicated in item 1 of the application form, an address for correspondence should then be indicated in item 4.  In other words, when there is just one applicant, the field “Address for Correspondence” should be completed only (a), where no representative has been appointed and (b), the address to which communications should be sent differs from that indicated in item 1.

Several applicants:  address for correspondence

Where there are several applicants with different addresses and the name and address of a representative has not been indicated in item 5 of the application form, a separate address for correspondence must be indicated.  In default of such indication in the application form, the address of the first person named as the applicant in item 1 is treated as the address for correspondence.

 A.I. Section 302

Phone and facsimile number and email address

The numbers or email address given should be those of the person whom the International Bureau should contact if and when it needs to get in touch with the applicant.

Item 5:  Appointment of a representative (if any)

If the applicant wishes to be represented before the International Bureau, the name and address of the representative should be given in this part of the form.  The information should be sufficient to enable correspondence to be sent to the representative, and should preferably include telephone and facsimile numbers and any email address.  For E-filing, the email address has to be indicated as the International Bureau will confirm receipt of the international application at that email address.

Rules 3 and 7(5)(b)A.I. Section 301

Where the name of the representative is in characters other than Latin characters, the name must be indicated as a transliteration into Latin characters, following the phonetics of the language of the international application.  Where the representative is a legal entity, the transliteration may be replaced by a translation into the language of the international application.

A.I. Section 301(c)

In order to give effect to the appointment of a representative, the international application form must either be signed by the applicant at item 19 or be accompanied by a power of attorney, and the appropriate box should be ticked in item 5.  For E-filing, a power of attorney accompanying an international application filed through E-filing shall be in PDF format.  If the application is not signed by the applicant and a power of attorney cannot be provided at the time of filing, the application may nonetheless be submitted, bearing in mind that a power of attorney must be received as soon as possible to avoid delaying treatment of the application.

Rule 3(2)(a)

The Hague System does not contain any restriction or requirement as to who may be appointed as representative before the International Bureau (concerning, for example, professional qualification, nationality or residence).  It follows that an applicant may appoint a representative residing or carrying on business in a Contracting Party which is not the State of origin or the applicant’s Contracting Party, and it is not even necessary that the representative be residing or carrying on business in a Contracting Party.

The appointment of a representative in the international application empowers the representative to act only before the International Bureau.  It may subsequently become necessary to appoint one or more further representatives to act before the Offices of designated Contracting Parties, for example, in the event of a refusal of protection notified by such an Office.  In such case, the appointment of a representative is governed by the requirements of the Contracting Party concerned.

The International Bureau records in the International Register the appointment of a representative and any other relevant fact concerning such representative.

Item 6:  Number of industrial designs, reproductions and/or specimens (mandatory)

The following must be indicated in item 6 of the international application form:

Rule 7(3)(v)

For E-filing, paragraphs (a) and (b) under item 6 will be filled in automatically based on the information and reproductions provided.  Information in respect of paragraph (c) is not relevant when filing electronically.  Furthermore, E-filing is unavailable if the application includes specimens of the industrial design(s) instead of reproductions.

Item 7:  Designated Contracting Parties (mandatory)

The applicant must, by ticking the appropriate box, designate each Contracting Party where protection is sought.  If filing electronically, only those Contracting Parties which may be designated appear in the E-filing interface.  It is mandatory to indicate all Contracting Parties for which protection is sought.  No Contracting Parties may be added afterwards.

60 Article 5(2)99 Article 5(1)(v)Rule 7(3)(vi)

What Contracting Parties may be designated?

Each designated Contracting Party must be bound by an Act – the 1999 Act and/or the 1960 Act – to which one of the Contracting Parties indicated in item 2 (Entitlement to file) is also bound.  A table of Contracting Parties, with an indication of the Act or Acts to which each particular State is party, is annexed to official form DM/1.  In the E-filing interface, the selection of Contracting Parties that may be designated is determined automatically on the basis of the entitlement to file data provided under item 2.

For example, if an applicant has indicated that he has an establishment only in Country A, which is bound exclusively by the 1999 Act, and has not indicated any other entitlements, he may only designate Contracting Parties which are bound by the 1999 Act, whether or not such Contracting Parties are also bound by the 1960 Act.  He may not, however, designate Contracting Parties bound exclusively by the 1960 Act.

If, instead, the applicant has indicated that he has an establishment in Country A, which is bound by the 1960 Act, and that he also has a domicile in Country B, which is bound by the 1999 Act, the application may cumulatively designate Contracting Parties which are party to either the 1960 Act exclusively, the 1999 Act exclusively, or to both the 1960 Act and the 1999 Act.

A special case of plurality of entitlements arises in respect of States members of an intergovernmental organization that is a Contracting Party, where those States are themselves bound by the 1960 Act.  For example, an applicant having the nationality of Contracting Party A, bound exclusively by the 1960 Act, that is a member State of the European Union, could, as a result, designate all Contracting Parties bound by the 1960 or 1999 Acts, as the European Union is a Contracting Party to the 1999 Act.

Where an applicant enjoying a plurality of independent entitlements under the 1960 and 1999 Acts designates a Contracting Party bound by the same Acts, the designation of that Contracting Party will be governed by the 1999 Act (refer to “Determination of which Act is applicable in respect of the designation of a given Contracting Party”).

It is essential that an applicant designates, at the time of filing of the international application, all those Contracting Parties where it is intended to seek protection for an industrial design.  If it subsequently becomes necessary to extend protection to additional Contracting Parties, this can only be done by means of filing a new international application.

Protection in the State of origin and in the applicant’s Contracting Party

As a matter of principle, it is possible for an applicant under the Hague System to request protection in the State of origin and in the applicant’s Contracting Party (refer to “Entitlement to file an international application”).

The 1960 Act provides as a principle that an international registration has effect in the State of origin, unless otherwise specified in its national legislation.  Given that information concerning such exclusion is not required to be communicated to the Director General of WIPO, the International Bureau does not carry out an examination in that respect.

60 Article 7(2)

The 1999 Act expressly provides that any Contracting Party whose Office is an Examining Office may, in a declaration, notify the Director General of WIPO that, where it is the applicant’s Contracting Party, its designation in an international registration has no effect.  Where a Contracting Party which has made that declaration is indicated in an international application both as the applicant’s Contracting Party and as a designated Contracting Party, the International Bureau disregards the designation of the Contracting Party in question.

99 Article 14(3)

Application filed in the name of the creator

If the person identified as the creator in item 11 of the application form is other than the applicant, through designating the Contracting Party having made a declaration under Rule 8(1)(a)(i) that its legislation requires an application for the registration of an industrial design to be filed in the name of the creator of the design, the applicant states that the present international application has been assigned by the creator to him and that the creator declares that he believes himself to be the creator of the industrial design (refer to “Special requirements concerning the applicant” and “Item 11: Identity of the creator”)1.

Rule 8(1)

Item 8:  Products which constitute the industrial design or in relation to which it is to be used (mandatory)

Item 8 provides for a table in which the applicant must indicate what the industrial designs consist of.  Such indication must be considered differently, depending upon whether one is concerned with a two-dimensional or a three-dimensional design:

  • if the industrial design consists of a product, the usual generic name of that product should be indicated, for example:  “chair”;
  • if the industrial design consists of a decorative motif in two-dimensions destined to be used in relation to a product, that product should be indicated, for example:  “drawing to be used on dishes” or “motif for textiles”.

These indications must be given for each industrial design, in numerical order.

60 Article 5(2)99 Article 5(1)(iv)

The laws of Japan and the Republic of Korea prescribe that the scope of protection of an industrial design be determined by the indication of a product, in addition to the representation of an industrial design.   Pursuant to the laws of those Contracting Parties, the indication of a product using a comprehensive term, for example:  “material for construction” is not allowed, since, in such a case, the scope of protection would be too broad.  Therefore, where an applicant designates those Contracting Parties in the international application, it is recommended that the product be indicated by terms by which the purpose of the product can be clearly understood (for example, “window profile”) in order to avoid receiving refusal upon that ground2.

The applicant may also indicate the (single) class of the Locarno Classification to which those industrial designs belong.  In the case of several designs included in the same international application, all those designs must belong to the same class of the Locarno Classification (refer to “Contents of the application”)3.

Rule 7(7)

In addition, in the right-hand side of the table, the sub-class to which the product(s) concerned belong may also be indicated.

The indications relating to the class and sub-class(es) are not compulsory and therefore failure to provide them does not result in an irregularity being raised by the International Bureau.  However, if the International Bureau finds that several designs included in the same international application belong to different classes of the Locarno classification, this constitutes an irregularity which will have to be remedied (refer to “Time limit for correcting irregularities”).

If one or more countries that have made a declaration under Article 13(1) is designated under the 1999 Act and the requirement of unity of design is not satisfied, the designs may nonetheless be filed in the same international application, but an Office concerned may refuse protection pending compliance through a procedure of division of the international registration before that Office (refer to “Unity of design”)4.

Item 9:  Description

As a matter of principle, the description is an optional indication which may be included in any international application.  If a description is provided, it should relate to the characteristic visual features of the industrial designs that appear in the reproductions, or describe the type of the reproduction(s) (refer to “Item 10:  Description of the reproductions (legends)”).  For example, a legend(s) may define a specific view of the product (e.g. “front view”, “top view”, etc.)5 (refer to “Representation of the industrial design” and “Numbering of reproductions and legends” ).  The description may disclose the operation or possible use of the industrial design as long as this description is not technical.  If the description exceeds 100 words, an additional fee of 2 Swiss francs per word exceeding 100 is payable.

Rule 7(5)(a)A.I Section 405(c)

However, under the 1999 Act, any Contracting Party whose Office is an Examining Office and whose law requires that an application for the grant of protection to an industrial design should contain a description in order for that application to be accorded a filing date may, in a declaration, notify the Director General of WIPO accordingly.  Romania and the Syrian Arab Republic have made that declaration.  Where such Contracting Party is designated under the 1999 Act, the international application should contain the required description.  Failure to provide the necessary description results in the international application being considered as irregular and may entail the postponement of the date of the international registration (refer to “Irregularities concerning special requirement notified by a Contracting Party or regarding the identity of the creator, description and claim” ).  Both the paper form (DM/1) and the E-filing interface clearly indicate in respect of which Contracting Parties the description is required.

99 Article 5(2)(b)(ii)Rule 7(4)(b)

The description may also serve as a way of disclaiming protection in respect of some characteristics of the industrial designs.  Furthermore, matter which is shown in a reproduction but for which protection is not sought may be indicated in the description (and/or by means of dotted or broken lines or coloring in the reproduction (refer to “Disclaimers and matter that does not form part of the claimed design”)).  Even if the disclaimed part of the design or the matter other than the design is indicated by those means in the reproductions, it is recommended to explain in the description how they are indicated in the reproductions to avoid any confusion by the Office of the Contracting Party.

A.I. Section 403

Item 10:  Description of the reproductions (legends)

In item 10, the corresponding code of a legend (for example, No. 1 for perspective view, No. 2 for front view, etc.) may be indicated.  If code No. 00 is indicated, other legends may be indicated (limited to 40 characters).

Item 11:  Identity of the creator

As a matter of principle, the identity of the creator of the designs is an optional indication which may be included in any international application.  However, such indication may be mandatory in some circumstances under the 1960 and/or the 1999 Act.

Under the 1960 Act, the law of a Contracting Party may require such information where it is designated under that Act (without the need to make a corresponding notification to the Director General of WIPO).  Therefore, whenever such a Contracting Party is designated under the 1960 Act, the international application should contain the identity of the creator.  Failure to provide this indication may lead to a refusal of protection being issued by the Office of the Contracting Party in question.  However, given that the requirement to furnish the identity of the creator does not have to be notified to the Director General of WIPO under the 1960 Act, the International Bureau does not carry out an examination in that respect.

60 Article 8(4)(a)

Under the 1999 Act, any Contracting Party whose Office is an Examining Office and whose law requires that an application for the grant of protection to an industrial design should contain the identity of the creator in order for that application to be accorded a filing date may, in a declaration, notify the Director General of WIPO accordingly.  Romania is the only Contracting Party that has made this declaration.  Therefore, if Romania is designated under the 1999 Act, the international application shall contain indications concerning the identity of the creator.

99 Article 5(2)(b)(i)

In addition, any Contracting Party to the 1999 Act whose legislation requires an application for the registration of an industrial design to be filed in the name of the creator of the design or requires the furnishing of an oath or declaration of the creator may notify that fact to the Director General of WIPO.  Finland, Ghana, Hungary and Iceland have made such a declaration to the effect that the application be filed in the name of the creator, therefore applicants who designate Finland, Ghana, Hungary and/or Iceland in their international applications shall indicate the identity of the creator as a matter of course under this item.  If the person identified as the creator is other than the applicant, when designating such a Contracting Party, the applicant also states under item 11 of the form that the present international application has been assigned by the creator to him and that the creator declares that he believes himself to be the creator of the industrial design (refer to “Special requirements concerning the applicant and the creator” and “Application filed in the name of the creator”).  Both the paper form (DM/1) and the E-filing interface clearly indicate in respect of which Contracting Parties the indication of a creator is required.

In the case that a Contracting Party having made a declaration requiring the furnishing of an oath or a declaration of the creator is designated in an international application, the international application shall be accompanied by an oath or declaration of the creator and contain indications of the identity of the creator.  At present, only the United States of America has made such a declaration.  Annex I to form DM/1 (refer to “Annex I:  Oath or Declaration of the Creator”) and the E-filing interface allows the applicant to submit a declaration of inventorship (or, if not possible, a substitute statement in lieu of a declaration of inventorship) for the designation of the United States of America.  It is mandatory content for an international application designating the United States of America.

99 Article 10(2)(b)Rules 7(4)(b), 8(1), (2) and (3)

Finally, the law of a Contracting Party may require that the identity of the creator be indicated.  Bulgaria, Japan, Norway, Republic of Korea, Serbia, Tajikistan and Turkey have informed the International Bureau that their respective national laws require that element.  Applicants who designate Bulgaria, Japan, Norway, Republic of Korea, Serbia, Tajikistan or Turkey are thus advised to declare the identity of the creator as a matter of course.  However, given that this is an optional indication under the international procedure as such the International Bureau will not examine whether this requirement has been complied with or not.

Item 12:  Claim (applicable to the designation of the United States of America only)

Where the international application contains the designation of the United States of America, a claim with the wording as specified in the declaration under Article 5(2)(a) of the 1999 Act made by the United States of America must be contained in the international application (the ornamental design for [indicate an article] as shown and described).  That wording is reproduced in the DM/1 form and the E-filing interface.

If the United States of America is not designated, a claim may not be included in the international application.

Item 13:  Priority claim – Article 4 of the Paris Convention

Priority of an earlier filing may be claimed under Article 4 of the Paris Convention.  Priority may be claimed on the basis of a first filing made in one of the States party to the Paris Convention or any member of the World Trade Organization.

60 Article 5(2)99 Article 6(1)(a)

Conversely, since an international application for registration of industrial designs may be a first application under the Hague System, it may itself also serve as a basis for claiming priority with regard to a subsequent national or regional application.

Where it is intended to claim priority, this should be indicated in item 13, by ticking the appropriate box.  The priority claim may be to a single earlier filing or to multiple earlier filings.

Where priority is claimed, there must be indicated the name of the Office with which the earlier filing was made, together with the number of the earlier filing (if available), and the date of the earlier filing (in the order of day, month and year).  A priority claim to an earlier filed international application for registration of industrial designs should indicate the International Bureau as the Office of earlier filing and identify the number of the earlier filing either by the international registration number or by the nine-digit application number assigned by the International Bureau6.  Where priority is claimed from more than one earlier filing and all the relevant indications cannot be accommodated in the space provided, then (unless a self-generated form is used) those with the earliest date should be indicated in item 13 and the remainder should be set out on a continuation sheet.

Rule 7(5)(c)

Where the earlier filing does not relate to all the designs included in the international application, the applicant should indicate those designs for which priority is claimed.  Such indication should be made by reference to the numbers of the designs in question.  If no indication is made in this part of item 13, it will be assumed by the International Bureau that the priority relates to all the designs.

The International Bureau disregards any claimed priority which bears a date which is more than six months earlier than the filing date of the international application, and so informs the applicant.

Where an applicant claims the priority of an earlier application, copies of the earlier application upon which priority is based (“priority document(s)”) should not be included with the international application sent to the International Bureau, neither is the “late” submission of copies of the earlier application to the International Bureau allowed. Any priority document submitted to the International Bureau will be disposed of, with the exception of the submission of priority documents using Annex V (or corresponding section in the E-Filing interface), for the purpose of a designation of the Republic of Korea, as explained below.

The International Bureau confines itself to establishing only that the required particulars have been included in the international application form.  As explained above, the International Bureau cannot accept a priority document as such.  This does not, however, preclude an Office of a designated Contracting Party from requesting that the holder, in any particular case, furnish a copy of the priority document to it directly.  Such a request could, for example, be made in the context of a refusal where the Office takes the view that the priority document is necessary in order to establish novelty, because of disclosure during the period covered by the priority claim.

Notwithstanding the general principle above, Japan and the Republic of Korea have indicated that their national laws require that a priority document be furnished to their Offices, in all cases, in order to support priority claims, within three months from the date of publication of the international registration in the International Designs Bulletin, and such a priority document be certified by the Office in which the earlier application was filed (“certified priority document”).

For both Japan and the Republic of Korea, the period for submitting a certified priority document is three months from the date of publication of the international registration in the International Designs Bulletin, failing which the right of priority will be lost and, as a consequence, their Offices may refuse the international registration. In particular, it should be noted that pursuant to the national legislation of Japan and the Republic of Korea, the international registration may be refused on the ground of lack of novelty if the first filing on which the priority is based was published prior the date of the international registration (which in most cases is the same as the filing date of the international application), and no certified priority document was submitted within the above mentioned three-month period from the publication date.

Moreover, if the holder resides outside the country (i.e., Japan or the Republic of Korea, as the case may be), the certified priority document must be submitted through a local representative. The Japan Patent Office (JPO) requires an original certified priority document, while the Korean Intellectual Property Office (KIPO) accepts a copy of the certified priority document.

This being said, KIPO accepts a copy of the certified priority document submitted through the International Bureau. In such a case, the document may be furnished when filing through the E-filing interface, or by using Annex V to form DM/1. The submission of a certified priority document through the International Bureau in this manner is only possible at the time of filing the international application and only to support the priority claim for the designation of the Republic of Korea.

For the United States of America, a certified priority document must be submitted during the pendency of the application for patent before the United States Patent and Trademark Office (USPTO) (i.e. prior to issuance of the patent or abandonment) and, furthermore, should be submitted on or before the date of the payment of the issue fee (second part of the individual designation fee for the United States of America). If the certified priority document is submitted after the date of payment of the second part of the individual designation fee, the patent will not include the priority claim unless corrected in accordance with United States law (refer to 37 CFR 1.55). The submission of the certified priority document should be accompanied by a cover letter identifying the application to which the certified priority document is directed. Such a letter must be signed either by a patent practitioner registered to practice before the USPTO or by the applicant, provided that the applicant is not a juristic entity.

Item 14:  International exhibition – Article 11 of the Paris Convention

Temporary protection of designs exhibited at certain exhibitions may be claimed under Article 11 of the Paris Convention.  If it is intended to claim exhibition priority in the international application, the applicant should so indicate, by ticking the relevant box in item 14 of the international application form.

Rule 7(5)(d)

In addition, the application form must indicate where the exhibition took place, the date on which the product was first exhibited and the number of each industrial design shown at the exhibition.

Where the claim does not relate to all the designs included in the international application, then the applicant has the option of indicating either those designs for which exhibition priority is claimed, or is not claimed, depending on which is more convenient.  If no design is indicated, it is assumed by the International Bureau that all the designs were shown at the exhibition in question.

Item 15:  Exception to lack of novelty (optional element applicable to the designation of Japan and/or Republic of Korea only)

Item 15 allows the applicant to make a declaration concerning an exception to lack of novelty in respect of (a) designation(s) of Japan and/or the Republic of Korea.  The applicant shall indicate the industrial design(s) for which he claims the benefit from exceptional treatment provided for in the design law of the Contracting Party(ies) concerned. 

With respect to the designation of the Republic of Korea, the supporting documentation may be submitted along with the international application using Annex II or directly to the Korean Intellectual Property Office (KIPO).  The documentation duly received by the International Bureau will be electronically distributed to KIPO.

With respect to the designation of Japan, the Japan Patent Office (JPO) requires that the supporting documentation be submitted to it directly within 30 days from the date of publication of the international registration in the International Designs Bulletin.  The documentation submitted directly to the JPO or KIPO should furthermore be presented through a local representative, where the holder resides outside of the country.

It should be noted that a declaration concerning exception to lack of novelty might affect the applicant’s rights in other jurisdictions.  It is the responsibility of the applicant to ensure that his rights are preserved.

Item 16:  Relation with a principal design (optional element applicable to the designation of Japan and/or Republic of Korea only)

Item 16 is optional content of the international application.  It is applicable for the designation of Japan and the Republic of Korea only (refer to “Optional contents”).  Under the related design systems of those countries, a design may be registered as a design related to another design to which it is similar and identified as a principal design, under the condition that both designs belong to the same applicant/holder. Failure to do so may lead to a refusal by the Office concerned on the ground of conflict with a prior similar design.

Accordingly, in order to forestall a possible refusal, the applicant may indicate that some or all of the industrial designs contained in the international application are to be considered in relation to a principal design that

    • is contained in the present international application (in such a case, that design should be indicated as the principal design);
    • is contained in, or is the subject of, a prior application or registration (national or international).

Furthermore, where the principal design is not the subject of the same international application, the international application containing the design(s) which is(are) requested to be registered as related design(s) has to be filed within the prescribed periods : under the national law of Japan, before the publication of the national or international registration containing the principal design, and under the national law of the Republic of Korea, within one year from the filing date of the national or international application containing the principal design.

Examination as to whether or not a design may be registered as a related design will be conducted by the Japan Patent Office (JPO) and Korean Intellectual Property Office (KIPO), respectively.  In the event of a notification of refusal of the effects of the international registration issued by the Office on the ground of missing/erroneous indication of the principal design, the holder of the international registration may, in his reply to the Office, request the addition or deletion of the indication of the principal design so as to overcome such a refusal ground.

Detailed information on the related design system is available on the JPO website (in English) and on the KIPO website (in Korean only).

 

Item 17:  Publication of the international registration

With regard to the timing of publication, the general rule is that publication takes place six months after the date of the international registration, unless the applicant requests otherwise (refer to “Timing of publication”).  The period of six months takes account of the fact that, under some national and regional laws on the protection of industrial designs, deferment of publication is not allowed but a certain period of time elapses before the registration of an industrial design is published, since the examination (whether it be formal or substantive) and the technical preparations for publication require that period of time.  Therefore, by providing for the period of six months, the Common Regulations, in effect, grant to the holder of an international registration the same benefit of de facto deferment that he would have enjoyed if he had filed national and regional applications.

Rule 17(1)(iii)

There are two exceptions to the general rule that an international registration is published six months after the date of the international registration, namely, where an applicant requests immediate publication or requests deferment of publication.

Immediate publication

An applicant may request immediate publication by ticking the appropriate box in item 17.  There may be situations where early publication could be an advantage.  For instance, under a national or regional law it may be the case that the right flowing from registration of an industrial design may only be enforced after it has been published.  However, the notion of “immediate” publication should in any event also take account of the time required by the International Bureau to carry out the relevant technical preparations.

Rule 17(1)(i)

Deferred publication

An applicant may request that publication of the international registration be deferred, by ticking the appropriate box at item 17 on the international application form.  In such case, the period of deferment which is required should be indicated in the appropriate part of this item, expressed in months.

Rule 17(1)(ii)

With regard to the duration of deferment which may be requested, refer to “Periods of deferment”.  Both the paper form (DM/1) and the E-filing interface clearly indicate the periods of deferment which may be requested in respect of certain Contracting Parties.

Item 18:  Reduction of the United States of America individual designation fee (applicable to the designation of the United States of America only)

The United States of America has made the declaration referred to in Article 7(2) of the 1999 Act that, in connection with an international application in which the United States of America is designated, the prescribed designation fee shall be replaced by an individual designation fee.

The declaration specified, in accordance with Rule 12(3) of the Common Regulations, that the individual designation fee comprises two parts.

The declaration also specified reduced amounts for applicants who qualify:

  • for “small entity” status within the meaning of Section 41(h) of Title 35 of the United States Code and Section 3 of the Small Business Act, and applicable regulations of the United States Patent and Trademark Office (USPTO);
  • as a “micro entity” within the meaning of Section 123 of Title 35 of the United States Code and applicable regulations of the USPTO.

To benefit from a reduction of the individual designation fee in respect of the United States of America, the applicant may assert small entity status by checking the appropriate box.  If the applicant checks the box for micro entity, he has to submit the micro entity certification form PTO/SB/15A or PTO/SB/15B (available using Annex IV:  Reduction of United States individual designation fee).
 

Item 19:  Signature by the applicant or his representative (mandatory)

The international application form may be signed by the applicant or his representative (or by an Office when the international application has been presented to the International Bureau through that Office).  The signature may be replaced by the affixing of a seal.  In either case, the name of the signatory should be indicated separately.

Rule 7(1)A.I. Section 202

For E-filing, a signature is replaced by an electronic authentication through a user account which requires the user account holder’s user name and password.  It is also recommended to indicate an email address of the applicant/contact person.

A.I. Section 205

Name of contact person

It is not obligatory, but may be useful, for the applicant to indicate the name of the person to contact, if necessary.  This may be particularly of interest where the international application is filed in the name of a legal entity.

Payment of fees

The following paragraphs should be read in conjunction with the general remarks contained in “Payment of fees to the International Bureau” concerning fees.

There must be indicated, on the fee payment sheet which precedes the Fee Calculations Sheet and forms part of the international application form:

  • an authorization to debit the required amount from an account opened with the International Bureau (indicating also the name of the holder of the account, the account number and the identity of the party giving the authorization), or
  • the amount of fees being paid, the method by which payment is being made and the identification of the party making the payment.

Where the former method is adopted, it is not then necessary to specify the amount of the fees in question.  This has the advantage of avoiding the risk of a fees irregularity.

Debiting from a current account opened with the International Bureau is available also in the E-filing interface.  The E-filing interface further allows the online payment by credit card.

Fees due

The fees payable in connection with an international application consist of:

  • a basic fee;
  • a standard designation fee (level one, two or three) or, where a designated Contracting Party is one in respect of which an individual designation fee is payable, that fee (refer to “Individual designation fees”)8;
  • a publication fee, consisting of an amount to be paid in respect of each reproduction to be published and, where these reproductions are shown on a page of A4 format (refer to “The reproductions of the industrial designs”), an amount to be paid in respect of each such page, in addition to the first.

Rule 12(1)

Reduction of fees for applicants from Least Developed Countries (LDCs)

For international applications filed by applicants whose sole entitlement is a connection with a Least Developed Country (LDC), in accordance with the list established by the United Nations, or with an intergovernmental organization the majority of whose member States are LDCs, the fees intended for the International Bureau are reduced to 10% of the prescribed amounts (rounded to the nearest full figure).  The reduction also applies in respect of an international application filed by an applicant whose entitlement is not solely a connection with such an intergovernmental organization, provided that any other entitlement of the applicant is a connection with a Contracting Party which is an LDC or, if not an LDC, is a member State of that intergovernmental organization and the international application is governed exclusively by the 1999 Act.  If there are several applicants, each must fulfill the said criteria.

The reduction to 10% of the regular amount of the fee also applies to the standard designation fees under the same conditions.

The Assembly of the Hague Union adopted, at its twenty-sixth (10th extraordinary) session, the following recommendation concerning individual fees:

“Contracting Parties that make, or that have made, a declaration under Article 7(2) of the 1999 Act or under Rule 36(1) of the Common Regulations are encouraged to indicate, in that declaration or in a new declaration, that for international applications filed by applicants whose sole entitlement is a connection with a Least Developed Country, in accordance with the list established by the United Nations, or with an intergovernmental organization the majority of whose member States are Least Developed Countries, the individual fee payable with respect to their designation is reduced to 10% of the fixed amount (rounded, where appropriate, to the nearest full figure).  Those Contracting Parties are further encouraged to indicate that the reduction also applies in respect of an international application filed by an applicant whose entitlement is not solely a connection with such an intergovernmental organization, provided that any other entitlement of the applicant is a connection with a Contracting Party which is a Least Developed Country or, if not a Least Developed Country, is a member State of that intergovernmental organization and the international application is governed exclusively by the 1999 Act.”

These fees are payable at the time of filing the international application, except that, where the international application contains a request for deferment of publication, the publication fee may be paid later (refer to “Consequences of deferred publication”).  In such case the applicant should tick the appropriate box on the fee payment sheet.

Rule 12(2)

Individual designation fee payable in two parts (applicable to the designation of the United States of America only)

The declaration under Article 7(2) of the 1999 Act made by the United States of America concerning the application of an individual designation fee specified, in accordance with Rule 12(3) of the Common Regulations, that the individual designation fee comprises two parts. The declaration also specified reduced amounts of the first part and of the second part of the individual designation fee for applicants who qualify for small entity status or as a micro entity.

The first part of the individual designation fee is to be paid at the time of the international application. The second part will become payable only if the United States Patent and Trademark Office (USPTO) is satisfied that the design that is the subject of the international registration qualifies for protection, i.e., if the design is allowed. Therefore, the payment of the second part will, if applicable, be required at a later date.

The date by which the second part of the individual designation fee must be paid will be notified through an invitation, namely a Notice of Allowance and Fee(s) Due (Notice of Allowance), issued by the USPTO both directly to the holder, using the address for correspondence established before it, and through the International Bureau.

The Notice of Allowance sets forth detailed information concerning the payment of the fee, the current economic status, and how to change the economic status.

Furthermore, the International Bureau will send a letter to the representative of the holder of the international registration or, if no representative was appointed before the International Bureau, to the holder of the international registration, giving instructions on the payment of the second part of the individual designation fee and indicating the date by which the second part of the individual designation fee must be paid (the same date as indicated in the Notice of Allowance).

Upon receipt of the invitation for payment, the holder may pay the fee either directly to the USPTO, in United States dollars, or through the International Bureau, in Swiss francs. The International Bureau only accepts the payment in full corresponding to the economic status communicated by the USPTO. Accordingly, if the economic status has changed, the fee should be paid directly to the USPTO.

Where the payment is made through the International Bureau, the International Bureau will record the payment in the International Register and notify the USPTO accordingly. No confirmation of payment will be sent to the representative/holder.

The International Bureau will not accept a late payment. Where the second part of the individual designation fee is paid through the International Bureau, the date of the payment will be the date on which the International Bureau receives the required amount, in accordance with Rule 27(5)(a) of the Common Regulations. Thus, for instance, in case of payment through a bank or postal transfer, the date of payment is the date on which the required amount is received in the WIPO bank or postal account. If the payment is late, all fees paid will be refunded.

If the second part of the individual designation fee is not paid in full within the time period specified in the Notice of Allowance to either the International Bureau or the USPTO, the USPTO may request the cancellation of the international registration with respect to the designation of the United States of America in accordance with Rule 12(3)(d) of the Common Regulations. The International Bureau shall then cancel the international registration in the International Register with respect to the designation of the United States of America and communicate the cancellation to the representative of the holder of the international registration or, if no representative was appointed before the International Bureau, to the holder of the international registration. The cancellation will be published in the International Designs Bulletin.

Finally, it shall be noted that Rule 5 does not apply to the payment of the second part of the individual designation fee through the International Bureau (refer to “Excuse of delay in meeting time limits”).

99 Article 7(2)Rule 5(5);  Rules 12(3)(c) and (d);  Rule 18bis(1)(a) and (2);  Rule 26(1)(viii);  Rule 27(5)(a)

The amounts of the basic fee, the standard designation fee and the publication fee are set out in the Schedule of Fees comprised in the Common Regulations.  With regard to individual fees, users should refer to “Individual Fees under the Hague Agreement where details of individual fees are published and updated.

In addition, a fee calculator is available which takes into account all the possible fee permutations, depending upon the particular Contracting Parties designated in any given international application, the number of industrial designs, etc.

As far as E-filing is concerned, the fee calculator automatically calculates and indicates the fees to be paid, based on the data entered by the applicant.

Annex I:  Oath or declaration of the creator

Annex I is mandatory content for an international application designating the United States of America and, if filed on paper, it must be submitted with the DM/1 form.  It cannot be submitted alone.  Annex I is also available in the E-filing interface, which automatically verifies that the mandatory contents for the designation of the United States of America in an international application are complied with and alerts the applicant accordingly.  Annex I is applicable for the designation of the United States of America only.

Annex I enables the submission of an oath or declaration of the creator pursuant to Rule 8(1)(a)(ii) or, in the impossibility to provide such a declaration, for example, where the inventor is deceased, a Substitute Statement in Lieu of a Declaration of Inventorship.   In the case of several creators, the declaration has to be signed by each of them.  In particular, the “inventor” must be the same as the “creator” indicated under item 11 of the DM/1 form or in the relevant sector of the E-filing interface.

For detailed information on the inventor’s oath or declaration, please visit the USPTO website.

Annex II:  Supporting document(s) concerning a declaration to the exception to lack of novelty

Annex II is optional content of the international application, which can be submitted with the DM/1 form.  This Annex cannot be submitted alone to the International Bureau.  Annex II is applicable for the designation of the Republic of Korea only (refer to “Optional contents”).  Annex II is also available in the E-filing interface.

A.I. Section 408(c)

The applicant may make a declaration as provided for in item 15 concerning exception to lack of novelty.  If this declaration is made with respect to the designation of the Republic of Korea, the international application may be accompanied by supporting documentation.  The supporting documentation must be attached to Annex II, its page numbers being properly referenced.  The documentation duly received by the International Bureau will be electronically distributed to the Korean Intellectual Property Office (KIPO).

The applicant is not obliged to submit supporting documentation at the time of filing the international application.  However, if the international application is not accompanied by its supporting documentation, the latter must be submitted directly to the Office of the Contracting Party concerned, subject to the national requirements.  It cannot be submitted later to the International Bureau (refer to “Item 15: Exception to lack of novelty”).

Annex III:  Information on eligibility for protection


Annex III is optional and serves to submit a statement that identifies information known by the applicant to be material to the eligibility for protection of the industrial design concerned.  This Annex must be submitted with the DM/1 form.  It cannot be submitted alone.  Annex III is also available in the E-filing interface.

Rule 7(5)(g)A.I. Section 408(d)

Annex III is only relevant for the designation of the United States of America and serves to submit an Information Disclosure Statement and relevant accompanying documentation as prescribed under the national law of the United States of America. The purpose of a “duty of candor” under the law of the United States of America is to assist the examination process by the USPTO obliging applicants to disclose any information they know of, which could consequently prevent them from acquiring a valid right.

In this context, it is recalled that Rule 6 of the Common Regulations does not exclude the submission of documentation accompanying the international application in a working language other than that of the international application (refer to “Languages”). Thus, to the extent that Annex III can be submitted only in respect of a designation of the United States of America, it is recommended that applicants submit their documentation in English.

Rule 7(5)(g)

The Information Disclosure Statement forms (SB08a/SB08b/SB08a-EFS-web) are available on the USPTO website.  These forms may be submitted to the USPTO also after the filing of the international application.

For detailed information on the Information Disclosure Statement, please visit the USPTO website.

Annex IV:  Reduction of United States individual designation fee

Optional Annex IV allows the applicant to support a claim of micro entity status (item 18) with a micro entity certification in order to benefit from a reduction of the individual designation fee in respect of the United States of America.  This Annex must be submitted with the DM/1 form.  It cannot be submitted alone.  Annex IV is also available in the E-filing interface.

A.I. Section 408(b)

The requirements to qualify for a reduction for micro entity status are set forth in 37 CFR 1.29 (law of the United States of America) and detailed in Section 509.04 of the Manual of Patent Examining Procedure.

Annex IV is mandatory content if the applicant claims “micro entity status” in item 18 of form DM/1.  The E-filing interface automatically alerts the applicant to attach the micro entity certification, completed and signed, to the international application in which the United States of America is designated and micro entity status is claimed.

The certification form (PTO/SB/15A or PTO/SB/15B), along with the instructions for its completion and signature, is available on the USPTO website. 

Annex V:  Supporting document(s) concerning priority claim

Annex V is optional content of the international application, which can be submitted with the DM/1 form.  This Annex cannot be submitted alone to the International Bureau.  Annex V is applicable for the designation of the Republic of Korea only (refer to “Optional contents”).  Annex V is also available in the E-filing interface.

Annex V is to submit (a) document(s) in support of a priority claim (priority document) to the Korean Intellectual Property Office (KIPO).  Where the priority document is not submitted with the DM/1 form, it may be submitted directly to KIPO.  In such a case, the priority document must be submitted to KIPO within three months from the date of publication of the international registration in the International Designs Bulletin.  If the holder resides outside the country, it must be submitted through a local representative.  The right of priority will be lost if the priority document is not submitted within this period.


  1. If Finland, Ghana, Hungary and/or Iceland is/are designated, it is compulsory to indicate in item 11 the identity of the creator.  The latter declares that he believes himself to be the creator of the industrial design.  Where the person identified as the creator is a person other than the applicant, it is hereby stated that the present international application has been assigned by the creator to the applicant.
  2. It should be noted that a more specific indication of a product would entail a possible risk of narrowing the scope of protection in other jurisdictions where a broader indication of a product is accepted and the scope of protection is determined by a product indication.
  3. It is to be noted that designs relating to products belonging to class 32 of the Locarno Classification cannot be protected under the national law of the Republic of Korea.  Consequently, any designation of the Republic of Korea in an international registration for industrial designs in class 32, would be subject to refusal by the Korean Intellectual Property Office (KIPO).
  4. For more specific information concerning the requirement of unity of design applicable in each of these Contracting Parties, please consult the Office(s) in question.
  5. For sufficient disclosure of an industrial design, Japan and the United States of America may require that the legend corresponding to each reproduction be indicated.
  6. In the case of E-filing, this nine-digit number is not automatically notified to the applicant. If an irregularity notice is issued, that number is included in the notice.
  7. In connection with an international application in which the Republic of Korea is designated, the Locarno Classification determines the designation fee in respect of that designation.  For international applications for designs relating to products belonging to classes 2, 5, or 19 of the Locarno Classification, level 3 of the standard designation fee applies.  For any other class, an individual designation fee applies in respect of a designation of the Republic of Korea.
  8. The United States of America applies the two part fee mechanism.  Under the national law of the United States of America, the second part of the individual designation fee is payable upon allowance of the application.  The statement of allowance issued by the USPTO invites the holder to pay the second part of the individual designation fee.  The second part may be paid directly to the USPTO or through the International Bureau.